Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 10/21/2024 (three IDSs submitted on this date) were filed before the first action on the merits of the application. The submissions are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Specification
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
The abstract of the disclosure is objected to because the first sentence of the abstract is information which is known from the title and can be implied. “Disclosed are…” is a phrase which can be implied and the rest of the sentence is information already known from the title. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-3, 5-10, 12-16, 18-20 is rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
On January 7, 2019, the USPTO released new examination guidelines setting forth a two-step inquiry for determining whether a claim is directed to non-statutory subject matter. According to the guidelines, a claim is directed to non-statutory subject matter if:
STEP 1: the claim does not fall within one of the four statutory categories of invention (process, machine, manufacture or composition of matter), or
STEP 2: the claim recites a judicial exception, e.g. an abstract idea, without reciting additional elements that amount to significantly more than the judicial exception, as determined using the following analysis:
STEP 2A (PRONG 1): Does the claim recite an abstract idea, law of nature, or natural phenomenon?
STEP 2A (PRONG 2): Does the claim recite additional elements that integrate the judicial exception into a practical application?
STEP 2B: Does the claim recite additional elements that amount to significantly more than the judicial exception?
Using the two-step inquiry, it is clear that claim 1 is directed toward non-statutory subject matter, as shown below:
STEP 1: Does claim 1 fall within one of the statutory categories? Yes. The claim is directed toward an apparatus (Processor and memory).
STEP 2A (PRONG 1): Is the claim directed to a law of nature, a natural phenomenon or an abstract idea? Yes, the claim is directed to an abstract idea.
With regard to STEP 2A (PRONG 1), the guidelines provide three groupings of subject matter that are considered abstract ideas:
Mathematical concepts – mathematical relationships, mathematical formulas or equations, mathematical calculations;
Certain methods of organizing human activity – fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions); and
Mental processes – concepts that are practicably performed in the human mind (including an observation, evaluation, judgment, opinion).
The apparatus in claim 1 is directed to mental process that can be practicably performed in the human mind and, therefore, an abstract idea. It recites determining if there is an “immediately actionable” status indicator in a a status report which consists of at least one status indicator. This is equivalent thinking over a received list (of indicators) and recognizing if there is an “mediately actionable” indicator within that list. Notably, the claim does not positively recite any limitations actually implementing the control command; while it recites that a control command is transmitted “transmit, to the vehicle,….” The actual reception and implementation by the vehicle is not positively claimed.
STEP 2A (PRONG 2): Does the claim recite additional elements that integrate the judicial exception into a practical application? No, the claim does not recite additional elements that integrate the judicial exception into a practical application.
With regard to STEP 2A (prong 2), whether the claim recites additional elements that integrate the judicial exception into a practical application, the guidelines provide the following exemplary considerations that are indicative that an additional element (or combination of elements) may have integrated the judicial exception into a practical application:
an additional element reflects an improvement in the functioning of a computer, or an improvement to other technology or technical field;
an additional element that applies or uses a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition;
an additional element implements a judicial exception with, or uses a judicial exception in conjunction with, a particular machine or manufacture that is integral to the claim;
an additional element effects a transformation or reduction of a particular article to a different state or thing; and
an additional element applies or uses the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception.
While the guidelines further state that the exemplary considerations are not an exhaustive list and that there may be other examples of integrating the exception into a practical application, the guidelines also list examples in which a judicial exception has not been integrated into a practical application:
an additional element merely recites the words “apply it” (or an equivalent) with the judicial exception, or merely includes instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea;
an additional element adds insignificant extra-solution activity to the judicial exception; and
an additional element does no more than generally link the use of a judicial exception to a particular technological environment or field of use.
Claim 1 does not recite any of the exemplary considerations that are indicative of an abstract idea having been integrated into a practical application. While the claim does recite that the apparatus is a least one processor and at least one memory, this is merely implementing the abstract idea onto a computer.
The claim recites that the processor and memory are configured to “receive”, from a vehicle, a report. This is extra solution activity of data gathering, only the reception is claimed. The actual generation/creation of the report is not recited only its reception.
The “Transmit” limitation is extra-solution activity of outputting a result corresponding to the mental process. Only the transmission of the command is claimed, the actual reception and implementation of the command by the vehicle is not positively recited. As such it fails to recite vehicle control. Reception and transmission of data is a well understood routine and conventional activity of computers (servers), such as the processor and memory of the apparatus.
Also, as noted above, merely including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea is indicative that the judicial exception has not been integrated into a practical application. In the instant case, the limitations of receiving (a report) and transmitting (a command) are performed by the processor and memory i.e. a computer. Thus, it is clear that the abstract idea is merely implemented on a computer, which is indicative of the abstract idea having not been integrated into a practical application.
STEP 2B: Does the claim recite additional elements that amount to significantly more than the judicial exception? No, the claim does not recite additional elements that amount to significantly more than the judicial exception.
With regard to STEP 2B, whether the claims recite additional elements that provide significantly more than the recited judicial exception, the guidelines specify that the pre-guideline procedure is still in effect. Specifically, that examiners should continue to consider whether an additional element or combination of elements:
adds a specific limitation or combination of limitations that are not well-understood, routine, conventional activity in the field, which is indicative that an inventive concept may be present; or
simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception, which is indicative that an inventive concept may not be present.
Claim 1 does not recite any specific limitation or combination of limitations that are not well-understood, routine, conventional (WURC) activity in the field. Selecting and transmitting data are fundamental, i.e. WURC, activities performed by servers, such as the processor and memory in claim 1.
CONCLUSION
Thus, since claim 1 is: (a) directed toward an abstract idea, (b) does not recite additional elements that integrate the judicial exception into a practical application, and (c) does not recite additional elements that amount to significantly more than the judicial exception, it is clear that claim 1 is directed towards non-statutory subject matter.
Regarding Claim 2, its limitation further limits the mental process, it is equivalent to a person have a preset rules/list of status which to sort a corresponding report’s status indicator/corresponding information into.
Regarding Claim 3, while at first look it would appear to recite vehicle control (and thus integration) at closer review the vehicle (and by extension its actions) however in view of claim 4 (which depends on claim 3) it is clear that only the issuing of a command is claimed, i.e. outputting of abstract data, not the implementing of the command. Hence claim 3 does not actually require vehicle control.
Regarding Claim 5, it further recites selecting a command from a list of predetermined commands, this is a mental process which can be performed in the human mind. This is equivalent to a person thinking of a proper response to the given status report/indicators.
Regarding Claim 6, while at first look it would appear to recite testing the sensors however in view of claim 1 (on which is depends) this limitation is further limiting the “receive” clause of claim 1, as such it is only modifying the received reports (abstract data) it is not positively claiming the testing of the sensor(s)/other systems of the vehicle.
Regarding Claim 7, it further recites the channels the report is received over, however in context of claim 1, it is only the reception of the report which is positively claimed not the transmission from the vehicle. As such only the abstract data of the report is being changed by claim 7’s limitation. The actual transmission/separate channels are not positively claimed.
Regarding Claims 8-10, 12-16, 18-20 are non-transitory and method equivalents to claim 1-3, 5-7 above. They have the same overall 101 analysis.
Claims 4, 11, and 17 are not rejected under U.S.C 101 as they positively recite the implementing of the/a control command by the vehicle, as such they integrate the abstract idea into practical application.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-20 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-30 of U.S. Patent No. 11305782 (Original Application/Parent of the patent family).
Although the claims at issue are not identical, they are not patentably distinct from each other because:
The Patent’s claims recited are more specific limitations compared to the current application’s claims. I.e. the Patent is effectively a species of the application’s genus. The claiming of a specific species renders obvious claiming the equivalent genus.
Claim 1-20 rejected on the ground of nonstatutory double patenting as being unpatentable over claims of U.S. Patent No. 12122398 (patent corresponding to application 17/772,110). Although the claims at issue are not identical, they are not patentably distinct from each other because:
The current application claim’s and 398’s claims recite the same overall invention/limitations they vary however in what claims and the exact wording of how each limitation is introduced.
Regarding the application’s independent claims, 398’s claim 1 recites the transmitting a report which includes a vehicle status (status indicator and status information) (which implicitly renders obvious claiming the receiving of the report); and that the duration (rate) of transmission is based on the vehicle status. 398 claim 5 recites that the size of report is dependent on the vehicle status. 398 claim 2 recites that the type of status includes a “fatal status” which in light of 398 claim 11 (which recites that the commands to be implemented includes braking/coming to a safe stop) renders obvious the sending of a command in response to an “immediately actionable status indicator” (i.e. a “fatal” status results in the vehicle pulling over/slowing down).
Application claim 2 is render obvious by 398 claim 2, a species renders obvious it genus. 398’s more specific status render obvious the general predetermined status associated with a status indicator/report information.
Application claim 3 is renders obvious by 398 claim 11, 398’s claim 11 recites the specific control steps, including pulling over/slowing down which would be expected to “mitigate” a dangerous scenario.
Application claim 4 is equivalent to 398 claim 6.
Application claim 5 is equivalent to 398 claim 7
Application claim 6 is equivalent to 398 claim 8.
Application claim 7 is equivalent to 398 claim 10.
Claims 8-20 are non-transitory and method equivalents the application’s apparatus claims 1-7 they have the same overall double patenting analysis.
Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter:
While rejected under U.S.C 101 and non-statutory double patenting the independent claims contain the same overall allowable subject matter as the parent applications/patents. No prior art was found to teach or render obvious the size and rate of the report (i.e. how frequently the report is received) being based on the at least one status indicator of the report.
If the double patenting rejections are overcome via terminal disclaimers and the 101 abstract idea rejections overcome then the independent claims, and by extension their dependents, would be in condition for allowance.
The above 101 abstract idea rejections could be overcome via positively claiming the reception and implementation of the control command by the vehicle. As currently claimed only the transmission of the control command is positively claimed, not its reception and implementation by the vehicle. (Integrating claims 3-4, 10-11, and 17 into their respective independent claims would overcome the 101 rejections).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US 20180284771 A1;
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KENNETH MICHAEL DUNNE whose telephone number is (571)270-7392. The examiner can normally be reached Mon-Thurs 8:30-6:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Navid Z Mehdizadeh can be reached at (571) 272-7691. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KENNETH M DUNNE/Primary Examiner, Art Unit 3669